Wednesday, June 30, 2010

Dear Rich: I'm about to launch my very small handmade frozen fruit pop business. The name we all like best for the product is PippiPops. I've done an online search through USPTO and although "Pippi Longstocking" is a federally registered trademark, "Pippi" is listed as "dead" and abandoned. Can a name like "Pippi" be used as a trademark? Do I risk infringing although my business has nothing to do with the books or other goods? We're big fans of Pippi Longstocking and it's not just because we've finally finished the Steig Larsson trilogy and we're convinced that the resourceful Lisbeth Salander is Pippi's distant Swedish relative (Steig once characterized Lisbeth as a "gone wrong version" of Pippi). No, the Dear RIch Staff goes way back to Pippi-land. We recall a mild mid-80s addiction to Mr. Nilsson and the re-runs of the Euro TV series (BTW, Pippi's first name is actually Pippilotta).

Pippi and food trademarks.Ennyway, we're not sure what's up with all that and we're hesitant to presume anything about the various uses. Most importantly, there is no indication that either the Swedish trademark owners or the California owners are planning to expand into food products and as far as we can tell, nobody is using Pippi as a federally registered trademark for food products. Therefore, we don't see any reason why you shouldn't proceed with the registration (though there is no such thing as a "guaranteed" registration). And yes, you are wise to avoid any references to the literary character in your advertising and packaging. FTC Disclaimer -- You may find some helpful resources in the trademark section of Nolo's website.

Tuesday, June 29, 2010

Dear Rich: I have what I believe is a great idea for an iPhone app. The problem is that I'm afraid to submit it to those companies that require you to submit your idea for a quote, because I believe that they may never get back to me and make the app themselves. Is there a way for me to copyright my app idea so that no one can create one that is similar?? Do you happen to know who I need to speak with? Do you mean who you can speak with at the Dear Rich Staff headquarters. Usually, operators are standing by to take your call but right now most of them are either too absorbed finishing the last book in the Stieg Larsson trilogy (or they're waiting for the DVD of the first book).

Right you had a question. The short answer is that 'No,' there is no way to copyright your app idea. Copyright doesn't protect ideas (despite some incredible misinformation on the web). For example, if you have an idea for an app that identifies poisonous mushrooms or makes gastrointestinal sound effects, anybody can use a similar idea as long as they don't copy the way you expressed your app. That's why success in the App Store is often based on getting the best version of something out quickly, and then popularizing it so that it turns up highest in App Store search results.

Paranoia strikes deep. If you're paranoid about the theft of an idea, you can ask the company to sign an NDA. For that to work, you need to be able to prove that the idea is a secret -- that is, it's not something commonly known in the App trade -- and that you've been treating it with secrecy. You can get free sample NDAs and explanations at our special website we set up for that purpose.

Hiring someone. When you hire a company, you should also make sure that they assign all copyright to you. If you're concerned about ripoffs, or just want to be extra-prudent, file a copyright application once the app is completed. We should also mention that some ideas (provided that they're not abstract) can be patented, which would likely be a waste of money and effort since it would take almost two years to get the patent and the shelf-life of your app would likely be over. Finally, although we can't guarantee it, in most cases a legitimate app developer is unlikely to steal an idea because it would be very bad PR for the developer's business.

Monday, June 28, 2010

Dear Rich: Just wanted to check before I make a blooper. Is it ok for me to write about somebody being a mad Bette Davis fan and mentioning her films and the love of them, for example? I'm trying to add authenticity to my crime novel. By "mad" we assume you're applying the colloquial use of the term as popularized in the New York metroploitan area in the 1980s (and which I first heard used by my relative, Matt "Frontrunners" Polazzo) -- that is, not the more common "brain sick" or "angry" interpretation of mad. Why do we ask? We don't really know since it doesn't really matter what the meaning is. The fact is you're never going to get in trouble for making one of your novel's characters into a rabid Bette Davis fan (though you won't want to put Bette's picture on the cover of your book). But for those of us who aren't particularly wild about Bette or those other over-the-top 30s-40s actresses -- Joan Crawford and Barbara Stanwyck, etc. -- may we suggest that a more interesting choice might be Veronica Lake or Gene Tierney. Y'know, just sayin'

Thursday, June 24, 2010

Dear Rich: I am in the process of writing my life story and how several well-known celebrities touched my life. How they came into my life, used aspects of my life to build their "persona" and labels, used in published works of art (books, music and movies), is a story with which they would not want told. Many family and friends have suggested that I fictionalize and I have considered writing in Roman a clef. Despite the fact that they are public figures, is it not my right to tell the true story with proof (names of family and friends, letters, documents, birth certificates, and pictures) of what they chose to draw from? Also, what legal issues may be raised in doing so? Did you ever stop and think that really, what's the difference between a famous person and a non-famous person? It's just a matter of who stumbles into the spotlight and how long they stay there. We bring this up because, as we'll explain, it's easier to get away with stretching the truth about public figures than it is with the rest of us little people.

"Is it not my right to tell the true story?" We're not sure exactly what you mean by that. There is no basic legal right to tell one's life story (although a lot of people using cell phones in public seem to think so). There is as you know, a right to speak freely. however, but even that right comes with some caveats.

Defamation and Invasion of Privacy. There are two major free speech exceptions when writing memoirs and autobiographies. (We got asked the difference the other day and that led to an interesting discussion.) Those exceptions have to do with (1) whether you are defaming someone (telling lies that cause harm) or (2) invading someone's privacy. Invasion of privacy comes in several flavors but generally, authors are protected as long as they are providing fact-based recountings of actual accounts.

Public figures and defamation ... Legally, it is "harder" to defame a public figure than a regular civilian. That's because public figures are supposed to have thicker skins (must be from all that spotlight heat) and a wronged celebrity would have to prove actual malice, a higher hurdle than what's required for mere mortals.

Your author contract. If you sell your memoir to a publisher, your author contract will likely require that you defend the publisher against any claims that occur. That could be risky from a personal liability point of view ... so in that case, you may want to have the book vetted for issues like this by a media attorney.

Wednesday, June 23, 2010

Dear Rich: I have been looking for ways to protect a monument from people taking pictures of it and selling the images. The icon is owned by a non-profit and is very distinguishable. Is there a way to protect "images" of the icon? The logo and name will be protected by a trademark but we would like to protect licensing of the image and monument through an application process, similar to a sports team at a university. We're not positive what type of work you're trying to 'protect.' You refer to it as both a monument -- which is a structure created to honor a person or event -- and an icon -- which is an enduring image or symbol. (Is it like maybe a statue honoring Michael Jackson?)

Is it bigger than a bread box? In any case, we'll start by assuming that you're talking about something made by humans, not a tree, or a waterfall, and that it is publicly viewable. Assuming that's the case, here are the rules.

Copyright. If the monument is a creative work like a statue and it's not that old -- pictures of it weren't published before 1923 -- then the person who created it (or the person who hired the creator) has copyright and can control reproductions of the work. So, if the non profit is the copyright owner, you may be in luck. Note, fair use is a possible defense when works are publicly viewable -- it all depends on context (is the work the heart of the picture) and use (is it transformative)?

Trademark. The monument can serve as your non-profit's trademark but that doesn't mean you can stop others from selling pictures of it. Your rights to the mark are limited to the classes of goods or services offered by your non-profit and most likely you would probably need to demonstrate that consumers associate the appearance of the monument with your organization. So, for example, Liberty Mutual was once able to stop others from using the Statue of Liberty to sell insurance (the mark has expired), and Paris Accessories can claim exclusive rights to use the Eiffel Tower to sell handkerchiefs. But courts have been reluctant to claim that the owner of a trademark of a distinctive building for example, can stop photographers. As one court noted, such photos don't confuse consumers as to the source of goods, they're just perceived as a photo of a well-known and accessible public landmark. So, we think your course of action is an uphill battle that will require consultation with a trademark attorney.

Tuesday, June 22, 2010

Dear Rich: How do I start an online business selling pet products? I don't know the first thing about it. This is a little out of our blog's bailiwick (as our friend Steve Fishman might say), but we'll see what the Dear Rich Staff can dig up. FIrst, do you mean you don't know the first thing about online businesses, selling pet products, or both? If it's 'both,' (and you're new to running a business) then you've got a big (perhaps insurmountable) challenge. Most small businesses survive their first year because the owner is knowledgeable as to the business model (how to make a profit) and passionate about the particular business or products.

The pet products biz. There are many pets and there are manypet products. You won't be able to underprice the big guys so you will need to develop a niche with unique or custom products. According to this American Pet products Association article, the following pet product trends are anticipated to be hot: earth-friendly pet products, branded pet products (for example a Harley Davidson carrier or Old Navy cat scratcher), pet friendly hotels and other lodgings, ultra-pet grooming products (electric toothbrushes for dogs), gourmet pet foods, programmable pet products (for example, programmable feeding systems, and self-cleaning litter boxes), fashion-influenced pet clothing, leashes, and carriers, and innovative methods of transporting pets (everything from portable carriers to motion sickness aids).

Do you have anything proprietary? Are your pet products decorated in a unique copyrightable way or have you invented something that might be patentable? Do you have a name or logo (for example, FURminator) that will grab attention? Can you create a YouTube pet video that will demonstrate your product's cool factor? Without a niche or unique products you'll have problems with your launch. Most importantly can you find a need that's unfulfilled and fill it? If not, you'll be slogging it out based on price with a lot of other hungry entrepreneurs.

The online biz. Setting up an online business is way beyond the scope of this blog. You'll need to learn about website development, SEO (or hire someone who does), or you'll need to join a community of online stores and hope for the best. You'll also need to move your website's Google page rankings from a 2/10 to at least a 5/10 to get the kind of traffic that will likely maintain a small online business. We'd quickly bore ourselves, our readers if we tried to restate all of the tiresome factors necessary to achieve success with an online store ... but there are tons of helpful books and websites that are just a Google search away.

Monday, June 21, 2010

Dear Rich: As a rights and permissions editor, I'm finding screenshots are becoming more and more complex to clear. Recently, an author submitted a screenshot that, to me, would require more than 20 permissions. Before I shock everyone with this info, I'd like your input. Our author is writing a "how to" book on IT. One screenshot is part of a lesson on how to arrange her favorite websites for quick location through the Top Sites, website. The second screenshot is the way the author would like to display how a certain website works works. The third screenshot is a music website for a lesson on how to find your favorite music. I believe every trademark used requires permission to use, as well as photos which would have to include a release from the identifiable people within them. Is this correct? Not exactly. You don't need permission to reproduce trademarks in an editorial context like yours (although, to be really safe, you should avoid using screenshots on the cover and in your advertising).

Copyright issues. Yes, a screenshot is categorized as an infringement because you are copying without permission. However, there is some legal consensus (at least in the U.S.) that thumbnail-styled reductions are permissible as fair use when used for informational purposes--for example, search results, historical timelines, etc. For example, your Top Sites screenshot doesn't need permission because it is a series of thumbnails of other sites and that's apparently considered an acceptable practice within the industry -- obviously Google (Chrome), Apple (Safari) and Microsoft (IE) (all of which offer 'top sites' features) don't seek permission and there is no reason for you, as well.

As for the other two screenshots ... The Dear Rich Staff regularly uses screenshots without permission in our books because we believe that it is commonly accepted as a fair use, is justified by the recent thumbnail decisions, and perhaps most importantly, no website, unless they are being portrayed horribly, would want to hassle someone who is ultimately promoting their site. It would be a bad legal, tactical and public relations decision. (That said, the more screenshots used from one source, the more likely you might run into a problem. For example, one exception to this -- and it wouldn't apply in your case -- might be if a company wanted to provide the exclusive manual on how to play its video game or operate its software program. In that case there might be a stronger basis for pursuing those who copy screenshots).

Sunday, June 20, 2010

Dear Rich: I am a cake decorator and sell my cakes to the public. I would like to use some vintage images of superheros on my cakes by means of printing them in edible ink onto rice paper creating an exact image. Would this be considered a breach of copyright? Also, many cakes are created, marketed and sold through many cake companies around the world in the likeness of cartoon and superhero charactors etc. How do so many cake retailers get away with it? Your question reminded us that the Dear Rich Staff is related to someone who decorated cakes -- actually they were ice cream cakes so there was that extra layer of pressure when she created them--the melting factor. She made them for celebrity parties (like I think she did one for Sarah Jessica Parker) and she was super qualified -- a graduate of Cooper Union. Anyway, she was really good at it but gave it up one day to train seeing eye dogs. You gotta admit that's a heckuva leap for an artist, to go from creating things that people see, to helping people who cannot see. We think she's so admirable that yesterday we gave her all our frequent flyer miles.

Right, you had a question. We'll avoid our typical wishy washy disclaimer in which we explain that we don't practice law in Australia. From what little we know we're going to assume the rules are similar for the U.S. and Australia--unless of course Australia has passed some major cake exception to the copyright law. Yes, you are infringing copyright by reproducing the copyrightable image of the superhero on the cake. You are also likely infringing the trademark, assuming the comic book company (or whoever owns the rights) is claiming trademark rights. The owners of most superhero rights have licensed the use of their money-makers for cakes. It's possible that your use of "vintage" superhero imagery may exempt you from infringement claims if the work is old enough to be in the public domain. Trademark rights on vintage superheros are unclear -- it really depends whether someone is stil exploiting the merchandising right for the vintage character.

How do others get away with it? The big cake companies probably have a license to use the imagery. The smaller cake companies may be just getting away with it because the licensing companies haven't noticed or don't care enough to sue. If you're a small to tiny operation that's not likely to get noticed, then you can probably proceed with caution. Of course, there's always the possibility that by the time you proceed to a lawsuit, the evidence will have been digested.

Thursday, June 17, 2010

Dear Rich: Is it smart to enter separate trademark applications for different classes of products if I'm afraid one class might hold up another, that is, in terms of showing proof of use, or if I'm afraid one class may be rejected/objected? Also, can I submit separate applications under the same class, but for different products? For example, if I submit an application, class 16, calendars, then at some point realize I want to sell posters, can I submit another application, class 16, posters? If so, is there a waiting period? Coincidentally, the Dear Rich Staff was faced with a similar issue at work the other day and our advice in that particular situation was for the applicant to file two applications because we felt one of the classes was likely to be problematic. The other was likely to fly right through. As you know, there is no additional cost for filing two applications (versus one application in two classes). It's really your call but we see no disadvantage to filing separate apps.

Adding other goods in the same class. Yes, you can add other goods in the same class, later. That depends on your budget and the extent of your marketing. Often, it's not necessary if the goods are closely related (as the trademark examiner is likely to have your back). On the other hand, you can't always count on the USPTO and if the goods are a key to your company's success, it might be worth the money to cover your bases with a new application. As for the waiting period, the time between filing and publication is impossible to predict. Expect six to nine months minimum. We'd like to sputter on but something's come up and we need to grab the Bushnells.

Wednesday, June 16, 2010

Dear Rich: I was a contractor that was owed about $50K in the past two years. The employer kept telling me they would pay me back all I was owed. But when I asked when, they refused to give a timeline or they would totally ignore me. We signed Work for Hire agreements for the work in the first two years based upon specific projects. But then we stopped doing it due to mutual trust. I continued to work for them on all the projects coming in. Do I own the work for which I haven't got paid in the past two years? How do I get my money back in an effective way? The Dear Rich Staff is sorry about your turn of events. You might own copyright in the work if you were an independent contractor and if there is no written agreement, or alternatively, there is a written agreement, but the work didn't fit into one of the nine enumerated categories. Even if you own it, the hiring party may have dibs on part of the copyright as a co-author depending on the contribution, if any. And in some cases, a court may awards a nonexclusive license to the hiring party allowing use of the work. The fact that you didn't get paid shouldn't affect either party's claim to copyright. The non-payment is a contract problem, not a copyright problems.

How can you get paid? If you were totally ignored for two years, we're sad to report that you have few choices -- threaten to sue, sue, or do nothing. As a general rule, the longer the debt has accrued, the harder it is to get paid. Perhaps your attorney can obtain some leverage if you can prove a copyright claim in the work. BTW, check to see if the written agreements contain an attorney fees provision; that may be of interest to your attorney.

Monday, June 14, 2010

Dear Rich: Thanks for the information you provided about vocal samples. If you don't mind, can I ask you why music sample CD's include a clause that their material is copyrighted when you've made it clear that you can't copyright short music samples and vocal samples? Last time we wrote about music samples, we were at an altitude of about 34K feet. Since we're approaching that altitude again, we might as well talk about them again. BTW, what's the story about touchpads on airplanes. Does the lack of moisture make it harder to use them? Should I lick my fingers? Or is that going to make me seem suspicious to my seat mates?

Right, you had a question. As we mentioned before, samples (or "loops," as they are sometimes called) are short sound snippets -- perhaps two measures of drums, or a vocal phrase ("ice, ice, baby"), or a bass riff -- that can be inserted as a 'standalone' audio file or repeated ("looped") to create a song. The advantage of using repetitive loops (such as in programs like Acid -- above) is that you can get exactly the same sound and intensity -- for example, a snare hit or a vocal pitch -- and not have to worry about pesky recording artists doing it different each time. Loops, and their technological friend, quantizing, guarantee that everything falls exactly on the same metronomic beat and never speeds up or slows down. The Dear Rich Staff is grateful for loops because without them we wouldn't have today's repetitive, fungible, beat-driven pap, err...pop music. And without that pop music, we wouldn't have anyone to sue for ripping off that music. Wait, that doesn't sound right?

Sorry, you had a question Part II. Yes, you can copyright loops and samples. First, you can get a compilation copyright on your unique collection of loops. Second, individual loops of music may be protected under sound recording copyrights. Third it's possible that a loop that is long enough and that demonstrates sufficient originality may be the subject of a music composition copyright. Our previous explanations regarding loops and copyrights had to do with whether someone using someone else's loops -- a customer or purchaser of a loop collection -- could claim copyright in the loop. In that situation, the user is similar to that of a user of a clip art collection. They are prevented from claiming copyright in the loop or art, by itself, either (1) because they are subject to a license agreement, or (2) because they are not the authors of the loop (and didn't create it), or (3) the individual loop can't be subject to a music composition copyright.

Attention Virgin America. Also, if any executives from VirginAmerica are reading this, why can't Main Cabin Select travelers use the First Class bathrooms? I mean, we're like in this no-man's land where the tickets cost more (okay, I cashed in my points for this one) but we're the furthest away from the main cabin bathroom and just a few feet from the 1st class bathrooms. Or what about this ... what if you could pay for first class bathroom privileges? I know the airlines are into charging for everything so why not that? Okay ... what about this. You can buy a first class bathroom key (that's somehow tied to fingerprint technology to prevent it getting passed around). So that way the attendants won't have to keep track of who has first class bathroom rights. Anyway, just sayin'.

Friday, June 11, 2010

Hi Blog Readers! Once again, we're taking time away from your important questions to do some tireless self-promotion for our new book, The Judge Who Hated Red Nail Polish, and today's tale fits in with an issue that's been arising quite a bit lately -- the standard for protecting short phrases. And equally important it deals with a powerful supernatural force that the Dear RIch Staff wishes it had more of -- mojo! So here's an excerpt about a kooky little copyright case called Strachborneo v. Arc Music (357 F. Supp 1393 (S.D. N.Y. 1973).

How Copyright Got its Mojo

Sol Rabinowitz didn't know much about copyright law or running a record label when he founded Baton Records in the early fifties ... but he learned fast. One of the songs he acquired for his label was I've Got My Mo-Jo Working (But It Just Won't Work on You) written by Preston Foster and performed by Ann Cole. (The "hook" for the song is the oft-repeated title.)

A warning to the artists. Rabinowitz had warned his artists not to perform songs before their releases--a practice that sometimes resulted in quickie covers that beat Baton's artists to the marketplace--but Cole performed the song regularly while on a tour with blues star Muddy Waters. Waters (aka McKinley Morganfield) loved the tune and when he returned to Chicago he recorded it for Chess Records, creating what many critics believe is one of the classic blues recordings. In the studio, Waters couldn't remember all the Preston Foster lyrics, so he modified the final verses with what he thought were the correct words and claimed songwriting credits. Unbeknownst to Rabinowitz, Chess Records released their Muddy Waters version within one week of the Baton Records release.

Chart-toppers. Although Ann Cole's version was the more popular release at the time (it went to #3 on the charts), the Muddy Waters version came into its own and eventually made it onto Rolling Stone Magazine's top 500 songs of all time. Both Waters and Preston Foster claimed copyright for the tune, and Rabinowitz had no choice but to hire lawyers to chase Waters and Chess Records. The result--Preston Foster was declared the sole songwriter and Rabinowitz's music publishing company, Dare Music, was the owner. A settlement for payment was reached between the parties. That cleared the way for Foster and Rabinowitz to earn the songwriting income from Waters' version as well as the 150 to 200 versions by artists who later covered the song, (including The Zombies, Jimmy Smith, Art Blakey, Canned Heat, Elvis Presley, B. B. King, Buddy Guy, Otis Rush, and Eric Clapton).

Here comes Ms. S. For almost two decades that income was unthreatened, until the early 1970s when a woman named Ruth Stratchborneo, writer of a song entitled Mojo Workout, claimed that she was the originator of the phrase "Got my Mojo Working" and that she had sung a version for a television commercial in 1955 (although she hadn't recorded a version of her song until at least 1960). She claimed that Foster's song had been based on hers and that she was entitled to royalties from both Foster's song and from Muddy Waters's version. Rabinowitz hired a lawyer, but one of his concerns was whether Preston Foster should testify. According to Rabinowitz, Foster was "one of the shyest human beings I've ever met." Rabinowitz's lawyer told his client that Foster was so introverted, "We're gonna have to do something else. We can't put this guy on the stand."

Court is in session. The case had been assigned to the late district court judge Charles L. "Charlie" Brieant, Jr., known for his bowtie and Rollie-style mustache, as well as his ability to dispose of controversial cases--one angry defendant sent poisoned chocolates to the judge's wife (she survived the murder attempt). To succeed on her copyright claim, Stratchborneo would have to prove that Foster had access to her Mojo Workout and that the two songs were substantially similar. Brieant demonstrated that Foster had no access to Stratchborneo's version of the tune before he wrote his song. And even if there had been access--and this is where the judge really showed his stuff--the songs were not substantially similar.

Defining mojo. Before explaining his logic, Judge Brieant insisted that an understanding of the litigation required defining "MOJO," which he referred to as "a collective noun used to describe one or more talismanic objects believed to have power intrinsic to their nature, and believed able to impart power, or ward off evil or misfortune by being worn close to the body of, or possessed by, the person to whom the MOJO appertains. A simple example of MOJO would be a rabbit's foot. Other examples of MOJO, mentioned from time to time in the trial record, include such amulets as black cat bones, shrunken heads, lodestones, half dollar with seeds, four leaf clover, ashes, blacksnake skin, strands of hair and teeth. MOJO is often worn around the neck in a leather bag or carried on the person. MOJO may, in a pastoral society, be taken into the fields with the cattle." Having provided that background, Brieant noted, "Reliance on and belief in MOJO naturally leads to the conversational gambit, "Have you got your MOJO working?" or "I've got my MOJO working." A person approaching a crisis, such as an examination at school, would be sure to have his MOJO with him, and working."

Freedom of the mojo. Then in a moment of judicial activism for which all MOJO holders will be forever grateful, Judge Brieant liberated and forever guaranteed the freedom of any songwriter to use the term. "MOJO is a commonplace part of the rhetoric of the culture of a substantial portion of the American people. As a figure of speech, the concept of having, or not having, one's MOJO working is not something in which any one person could assert originality, or establish a proprietary right." In short, Stratchborneo lost.

Waiting for the royalties. Preserving Preston Foster's claim to copyright has been worth the effort. According to a recent interview, Sol Rabinowitz claims the song still earns $20,000 to $30,000 a year. "Every six months I send Preston a check," Rabinowitz wrote at his website, "He's basically still making a living from this song." And thanks to copyright law, his Mojo will continue to be working for him for many years to come.

Thursday, June 10, 2010

Dear Rich, I read your post "Copyrighting tracks with vocal samples"...great read. I like that two music producers using the same vocal samples can co-exist in sample harmony. Does this apply to US only? I ask because my company sells vocal samples and most of my customers are from abroad, so I am wondering if your response applies to them as well. I have one customer in particular who is from Italy and registers their work through the Italian agency, SIAE. He tells me that a composer can fill out the SIAE form as just a composer without registering the melody. This is an option, but what happens if the composer does register our lyrics? Does the person from that moment (in Italy) become the author of the lyrics so he can claim rights vs other producer who will be using the same samples. Why the clouds? Because we're posting this from 34,961 feet (we're currently over Missouri) and what better place to discuss vocal samples. The Dear Rich Staff loves music samples--they're snippets of music that you can loop to create songs -- and we used to spend a disproportionate amount of time listening to and buying them.

Right, you had a question. Yes, we believe our previous answer should apply in most other countries. We checked your site and reviewed many of your vocal samples and we don't think there's much of a copyright issue, either for the U.S. or internationally. Your samples are all limited to a few words (i.e., "She's so fly," and "Play on playa"), so no user will be able to claim lyric copyright as to those phrases by themselves. As you know from previous blog entries, short phrases are not protected under copyright law. We can't vouch that's the rule internationally but if we were a betting blog, we'd bet that's the case. It's possible that if the entire song was built on these samples, a claim might be for a compilation or derivative copyright but that would not preclude others from using the samples or phrases. (We took a look at the basic principles of Italian copyright law and we think our answer is in the ballpark.)

And speaking of short lyric phrases ... If we remember where we left it, we'll reproduce a story tomorrow about a copyright case in which someone tried to claim copyright on the phrase "Got my mojo working."

Wednesday, June 9, 2010

Dear Rich: I work for an art publishing company and a question arose recently. We'd like to publish a photo of a girl playing a fiddle and she is wearing a belt buckle that says the name of her band. Should we remove the band name or is it safe to publish as-is? This issue came up in another instance. We publish the work of an artist who paints farm scenes and he has several brand-specific tractors in his paintings (John Deere, etc.). If he removes the tractor name is he in the clear? Or would the colors need to be changed as well so the imagery doesn't "suggest" John Deere? And is he free to publish prints of a barn image with the "Chew Mail Pouch Tobacco" advertisement painted on the side? I'm always uneasy making a call on these issues. I see you have a couple books, I might have to check them out! We hope you check out our books because from the looks of it, the Dear Rich Staff isn't having much luck at the slots. We included this photo just to let you know that we're not worried about reproducing trademarks in our photos. That's because editorial uses (yeah, that's us - ed) of trademarks don't require permission. Of course, we're not clear if your company is making editorial or commercial use. If you're publishing art books it's probably editorial; if you're publishing prints, it's more likely to be commercial.

Okay, so if your use is commercial ... Things can get a little murky when trademarks are included in commercially reproduced artwork. (By the way, we're assuming you have permission of the copyright holder of the photographs.) One court recently ruled that the use of a university's trademarks was okay in a painting of a former football player. The court concluded that "the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings." In other words, the artist's first amendment rights trumped the trademark issues. We think you're in the same ballpark. In the case of the fiddle player, we think you're okay not just because it's incidental to the photo but also because it's difficult to imagine that the band would object to the use. (A lawsuit seems like bad PR for the band.) As for the tractor photos, that also seems fine. Removing the trademarks seems more objectionable from John Deere's POV.

Finally ... If we were a betting blog, we'd also bet that you're also okay with your use of "Chew Mail Pouch Tobacco" because it's tough to imagine a lawsuit (especially since so many similar images are already available). BTW, that really reminds us of Episode 12, Season 1 of the Real McCoys when Grandpa and Luke kind of screwed up Kate's chances at being part of some church thing when they let some huckster advertise on their barn. Spoiler Alert: Turns out the same huckster tricked the local reverend, too.

Tuesday, June 8, 2010

Dear Rich: I recently came up with an idea to do a portrait of a now deceased punk rock icon. The portrait is to be more a personality study/project for myself and I had contacted members of his family to find out if I could use various photos of dead person for this project. Family member of dead person to whom the photos originally belonged said she would allow me to use them but that dead man's estate would more than likely sue. Keep in mind this project is not-for-profit and the portrait would not be a realistic rip-off from an existing photo. Can I do this without obtaining permission? Can I show the work in a gallery if it is not for sale? We didn't have any painted portraits of deceased punks to illustrate your question so we used this brush-stroked non-portrait of Iggy since Iggy is eternal punk which is beyond deceased punk. The photographer is part of the Dear Rich Staff and we sure hope she doesn't sue because it would be a heartbreaking lawsuit of staggering complexity.

Right, you had a question. We're not sure why a relative said that the dead punk's estate will sue you. Is that because they own the copyright in the photos? (Owning copies of photos and owning copyright in the photos are different.) If the portrait is derived from a photo, only the copyright owner of the photograph (usually the photographer) would have a claim for creating a derivative work (the portrait). That's what happened when the AP filed a lawsuit against Shepherd Fairey. But if you can dodge that claim under a fair use defense -- possible, but not certain depending on the similarities -- then you're probably okay unless you make and sell prints (and even that was excused in an Ohio case -- see this article for the skinny.

Monday, June 7, 2010

Dear Rich: If you don't have a federal registration, can you still have a trademark? When we started working as an attorney, one of the first jobs we got was working for a trademark attorney on a big case involving two restaurants. We had recently come out of law school after studying with the most excellent J. Thomas McCarthy and were excited to be working on trademark litigation. One afternoon we confided our excitement to the senior attorney who dismissed our comments with a wave of his hand. "Trademark law is bullshit," he said as he handed us another carton of documents to examine. It's been 25 years since we were told that pearl and we're still not sure we fully understand its implications. Was the guy just a jaded mouthpiece, tired of the irrationality and unpredictability of trademark litigation. Or did he hit the nail on the head? We bring this up now because we just re-read our answer, below and wonder if it has an unappealing odor, or whether we're offering practical advice. (BTW, that's what we're all about here at the Dear Rich Headquarters -- providing practical advice!)

Right, you had a question. The short answer is, yes, you can have a trademark even if it is not federally registered. Every state (and the federal government) recognizes rights in trademarks that are not registered (sometimes referred to as "common law trademarks"). Often, someone who is claiming common law trademark rights uses a little "TM" or "SM" (for service mark); the ® symbol can only be used if the mark is federally registered.

Trademarks 101. As a general rule, a business obtains trademark rights once it uses it in a commercial context--that is, the first to associate the mark with a product or service. After the first use, the owner may be able to prevent others from using it, or a similar trademark, for their goods and services as long as the owner continues to use the mark in connection with its goods and services. The rights of the trademark owner, particularly for a trademark that is not registered with the federal government, may be limited by the geographic extent of the use.

So, if you have a trademark, why register? Registering a trademark or service mark with the USPTO makes it easier for the owner to protect it against would-be copiers and puts the rest of the country on notice that the mark is already taken. We explained the rationale for registration better here.

Saturday, June 5, 2010

Dear Rich: I wonder if it is alright to create a website with a product name. If I create a website with the word wii in the domain and sell wii products, will I get a DMCA letter in future? How can I check if a word can be used in a domain name or not? If I check the USPTO and the mark states that it is "Live," does that mean that the word cannot be used in the domain at all? (SPOILER ALERT: This is a pretty boring answer.) (1) No, you won't get a DMCA notice for using someone else's trademark in your domain name. DMCA notices are issued when someone infringes a copyright by, for example, posting unauthorized copies of music or pictures. Domain names are a whole different trip. (2) The use of "LIVE" at the USPTO means that the trademark is active and registered or that the application is in progress and has not yet issued. Abandoned or cancelled marks are marked "DEAD." Just because a mark is listed as "DEAD" doesn't mean it's not being used; it just means there is no federal registration.

Domain names and trademarks.If you're using someone's trademark in your domain name, you may be okay. Then again, you may not. There are three types of claims you might trigger:

trademark infringement -- you create a domain using another company's trademark that is deliberately intended to confuse consumers into believing that the other company endorses, sponsors or is commercially associated with your website--for example, AmazonBooks.

dilution of a trademark -- you use a famous trademark in your domain name in a manner that tarnishes or blurs the reputation of the famous mark. For example, if an adult site were to tarnish a famous children's game and its trademark such as www.Candyland.com.

cybersquatting -- you adopt a domain with someone else's trademark in bad faith. For example, you would be cybersquatting if you adopt a domain for the purpose of holding it hostage and selling it to the trademark owner, or for the purpose of diverting customers of the trademark owner in order to make money from Google advertising.

What's going to happen to you? For the use you describe, we can't predict how Nintendo will react. Other sites have incorporated "wii" into their domains -- for example, Wii Chat and Wii Mommies -- and seem to be operating without a problem (although these sites don't directly compete with Nintendo or appear to sell Nintendo products.) At the same time, many other companies appear to permit the use of their marks in conjunction with domains selling products -- for example, Apple and Mac related sites. So, it's hard to tell (although our inclination is to avoid it.) If you do use Wii in your domain, you should disclaim any connection with Nintendo by prominently stating that the site is not affiliated with, endorsed by or associated with Nintendo. That won't prevent Nintendo from coming after you. But it could make your life easier if a dispute arises by showing your good faith attempt not to confuse consumers.

What's the worst that could happen? It's always hard to predict the worst that could happen. Arguably, if a claim is made, and Nintendo proves that you are likely to confuse consumers, a court could require you to pay all your profits and shut down the site. The Dear Rich Staff believes that if Nintendo learns of your use and is unhappy, the most likely result will be that Nintendo will ask you to shut down the site and hand over the domain name.

Thursday, June 3, 2010

Dear Rich: I have a number of photos that I have sold to magazines 20 years ago. These were sold as "First North American Serial Rights Only", and marked with a copyright symbol and year. A couple of the stories that these photos appeared in are now being reprinted in a book. My assumption is that the magazine publisher does not have the right to sell the photos used in the original magazine story to a book publisher without my permission. Am I correct? Yes, you are correct. As the American Society of Journalists explains at their site, First North American Serial Rights refers to a one-time right to first publish in North America. (It makes the Dear Rich Staff nostalgic just to hear this term as few, if any, publishing contracts still contain this limited right.) If you haven't already done so, you should register your photos with the U.S. Copyright Office. (This circular explains how to register groups of published photos.) Whether you want to expedite the registration depends on whether you believe you'll be litigating. (Probably, you'll be okay with a regular registration.) You should, of course, contact the book publisher and seek a fair compensation for the re-use.

Wednesday, June 2, 2010

Dear Rich: I'm developing a health-related program that will consist of a book, audio program, user-oriented website, and possibly other materials later, including software and a second book and audio program. The first product will be released this summer or fall. In 2009 I settled on the program's name and reserved that exact domain name. At that time a search indicated that neither this title (or anything close to it) was in use. This past week I did another search and found that a UK publisher is set to publish a book at the end of summer 2010, using the exact name of my program, domain name, and anticipated book title. (Their book is also on the same topic and is already listed as "to be published" on Amazon US.) I'm considering politely asking the UK publisher if they would consider changing their title, since I previously owned the domain name, and I imagine they would prefer to avoid marketplace confusion as well. Would it be worthwhile to file an Intent to Use trademark application at this point, and would that further my case in asking if they would consider changing their book title? Apologies for the long-winded question. You may notice that your question is not as long winded as when you sent it. We cut it by half so please don't sue us for creating an unauthorized derivative work. Anyway, your letter came at a good time because the Dear Rich Staff is rediscovering a lot of their old health/exercise DVDs, particularly the Anna Caban Pilates program with Anna and her pal, Tara. (Not the yoga Tara.)

Right, you had a question. We know what you mean when you say you've got the perfect title for your book. We once had the perfect title for a murder mystery we wrote but then it turned out everyone hated the title, so go figure! Anyway, one thing we know about the publishing world is that it is unlikely that the British publisher will change their title, no matter how nicely you ask. The choice of a title is made long before the book comes out and it's tied to things like catalogs, distribution data, ISBNs, CIPs, and lots of other pre-marketing details. If you're seeing it on Amazon, chances are good that the book is in production. Unless there is a showstopper of a lawsuit headed its way, the publisher will not want to change the title.

Trademarks, book titles. Filing for the mark for your program (you can't get it for a single book title) will not preclude the British use. If the British book is released in the U.S. before your intended use, the publisher might have a claim against you under unfair competition laws.

Consider the possibilities. It's always possible that the British book will appear and then disappear. (At least that's what happened to a lot of our books.) And, you also have to consider the possible responses by the publisher to your contact. There's always a chance that it may trigger an angry letter. We think you need to be patient. Is there any way to modify what you have and still take advantage of your domain name?

Dear Rich On the Road. Hey we're packing the tour bus with Advils, jamming the flashdrive with some mad PowerPoint, and loading up the Kindle with Elmore Leonard as we head out on our summer speaking tour and extravaganza. First stop is the Society for Scholarly Publishing in San Francisco where we'll speak on copyright and licensing ... then off to ... off to where? Gee, is that all we've booked so far? Oh wait, August 15, we're talking somewhere about something ... Okay, we'll get back to you on that one.

No questions today because we're all questioned out. We partied with the cool crew from the Society of Scholarly Publishing and answered all kinds of crazy questions about licensing and digitizing. (That's the Dear Rich Staff busy blogging in the Hilton lobby.) It was a four hour extravaganza with a great panel and moderator. I promised the gang that I'd post some neat stuff explaining content licensing so here it is.

The Dear Rich staff provides easy-to-understand answers to questions about copyright, trademarks and patents (and related law). Send us questions at dearrichquestion at gmail.com. We cannot guarantee an answer and if we do answer, that doesn't make us your lawyer. Please don't send questions if they are not for publication.